A guide to the UPC and the UP - Flipbook - Page 98
Multiple Defendants
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Art.33(1)(b) UPCA provides that the claimant may bring an action before the division
where the defendant, or in the case of multiple defendants, one of them, is resident
or has its principal place of business or, in the absence of either, has a place of business.
An action may be brought against multiple defendants only where the defendants have
a commercial relationship and where the action relates to the same alleged infringement.
The expression “commercial relationship” is undefined, but it indicates that the defendants
must all be commercially involved in the same alleged infringement.
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Even if the action has been commenced properly and the Court is competent in respect of all
of the defendants, the RoP provide that the Court has a discretion to separate proceedings
involving multiple defendants. 69 The Court may also join proceedings, whether or not between
the same parties and whether or not in the same division, where they concern the same patent
and where it is in the interest of the proper administration of justice and will avoid the risk of
inconsistent decisions. 70 To this end, where the Registry notes that two or more actions
concerning the same patent are initiated before several divisions, whether or not between
the same parties, it shall as soon as practicable inform the divisions concerned. 71
Actions for Compensation Regarding Licences of Rights
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Where a Unitary patent has been designated as subject to a licence of right under art.8 Unitary
Patent Regulation, the patentee must, in an action claiming compensation, commence the
action in a division where the defendant is resident or has a place of business. 72 The central
division will be competent where the defendant is resident outside the Contracting Member
States or does not have a principal place of business in one of them 73 or where the
relevant Contracting Member State does not have a local division and does not participate
in a regional division. 74
Revocation Actions and Actions for a DNI
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69
70
71
72
73
74
75
76
Revocation actions and actions for a DNI must be brought in the central division, provided
that a claim for infringement relating to the same patent between the same parties has not
been brought in a local or regional division, in which case, it must be brought in that local or
regional division. 75 Both revocation actions and counterclaims for revocation can be brought
without having to file notice of opposition with the EPO. 76
r.303(2) RoP.
r.340(1) RoP.
r.260(2) RoP.
art.33(1) para.2 UPCA.
art.33(1) para.3 UPCA.
art.33(1) para.4 UPCA.
art.33(4) UPCA.
art.33(8) UPCA.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 88
